AN INTRODUCTION TO LICENSING

Transcription

1 MALAYSIAN BIOTECHNOLOGY CORPORATION SDN BHD (Company No D) AN INTRODUCTION TO LICENSING <IB/CSSD/FAC/IP003> 2 NOVEMBER 2009 AUTHOR: SUMAH RAMACHANDRAN

2 TABLE OF CONTENTS PAGES 1.0 INTRODUCTION BASICS FACTS 2.1 What is a licence? What is a licensing agreement? What can be licensed? Who may licence? Who may obtain or use a licence? Difference between Licence and Assignment TYPES OF LICENCES 3.1 Exclusive licence Non-exclusive licence Sole licence ADVANTAGES OF LICENSING 4.1 Why license? PREPARING TO NEGOTIATE A LICENCE AGREEMENT 5.1 Due diligence NEGOTIATING A LICENCE AGREEMENT 6.1 Factors for consideration 11 <IB/CSSD/FAC/IP003> 2

3 7.0 APPENDIX 7.1 Appendix I Sample of Licence Agreement Appendix II Checklist: Matters for Consideration in a Licence Agreement 32 <IB/CSSD/FAC/IP003> 3

4 1.0 INTRODUCTION In today s global economy, the licensing of intellectual property (IP) is almost inevitable. It has become an integral part of business in nearly every industry, particularly in high technology sectors where capitalisation of intellectual assets seems to be the way forward to stay ahead in a dynamic and competitive business environment. As more businesses today become involved in some form of licensing transaction, it is crucial for businesses, especially for small and medium enterprises to understand the basic concepts of licensing to be able to capitalise on their IPs to achieve their business goals. This booklet aims to provide a general introduction to licensing and address some of the common matters one needs to take into consideration in negotiating a licensing deal. This booklet is intended only as a basic guide and is not, in any way, a substitute for professional advice. 2.0 BASIC FACTS 2.1 What is a licence? According to the Oxford Advanced Learner s dictionary, the noun licence means an official document that shows that permission has been given to do, own or use something, whereas the definition of the verb license is, to give somebody official permission to do, own, or use something. Likewise, in the context of IP, licence means a right or an authorisation given by the owner of an IP to someone else to use its IP, which would without a licence be unlawful. The rights under a licence are usually granted for a specific purpose, under certain agreed terms and conditions. The person or entity granting the licence is known as the licensor while the receiver or user of the licence is called the licensee. Licensing transactions can broadly be divided into two categories - Outbound licensing (also referred as licensing out or out-licensing ); and Inbound licensing (also referred as licensing in or in-licensing ). The term outbound licensing or out-licensing, refers to granting a licence to another party to use your IP whereas inbound licensing or in-licensing means obtaining a licence from another party, to use its IP for your own use. Under an outbound transaction, when a party licenses out its IP to someone, said party assumes the role of licensor. Conversely, in an inbound deal, when a party licenses in an IP owned by somebody else the role becomes reversed and said party now takes on the role of licensee. <IB/CSSD/FAC/IP003> 4

5 2.2 What is a licensing agreement? A licensing or licence agreement is basically a legally binding contract between a licensor and a licensee, by which the licensor gives the licensee certain rights or permission for the use of its IP, which would not otherwise be available to the licensee. 2.3 What may be licensed? Broadly speaking, anything that one owns or has rights to may be licensed. In terms of technology licensing, the IP rights protecting the technology, for example, patents, industrial designs, know-how, trade secrets etc. would typically be the subject matter of a licence. 2.4 Who may licence? The owner of the IP has the right to license to an interested party or multiple parties. In some cases, the owner may grant a licence to a main or master licensee, giving him sub-licensing rights. With such rights, the master licensee in turn, grants further licences, which are referred to as sub-licenses, to other interested parties. The parties receiving the sub-licences are known as sub-licensees. 2.5 Who may obtain or use a licence? Any interested party, either an individual or a company, may approach the owner of an IP to obtain a licence to use the same. 2.6 Difference between Licence and Assignment Assignment, in IP terms, means sale. It is basically an outright transfer of ownership of the rights of the owner of an IP, i.e. the assignor, to another person or entity, i.e. the assignee, for a sum of consideration. This means that, in an assignment, the assignor, i.e. the seller, relinquishes the title to the IP while the assignee, i.e. the buyer, acquires the title and becomes the new owner of the IP. A licence, as opposed to an assignment, does not involve any transfer of ownership. In licensing, the owner retains its ownership of the IP. The licensee is only given an authorization to use the IP, usually in return for some consideration, within certain stipulated terms and conditions. Further, a licence is revocable but an assignment is not. For a better understanding of the difference between the two, let us take the example of a tangible property such as a house. <IB/CSSD/FAC/IP003> 5

6 The sale of a house is similar to an assignment of an IP in that the ownership of the property is transferred from the owner to the buyer in return for an agreed price. Upon sale, the buyer becomes the new owner of the property, just like in an assignment. Renting a property such as a house, on the other hand, is similar to licensing an IP. When a house is rented by the owner to a tenant, usually for a fixed period of time, the tenant is obliged to pay a rental to the owner for the duration of his occupation. Here, the ownership of the house is not transferred to the tenant. The house remains the property of the owner. Similarly, in licensing, the ownership of the IP remains with the licensor. 3.0 TYPES OF LICENCES Basically, there are three types of licences, categorised according to the degree of exclusivity of rights granted under each type. They are: Exclusive licence; Non-exclusive licence; and Sole licence 3.1 Exclusive licence An exclusive licence is one where the licensee is the only one that is granted rights by the licensor. An exclusive licence not only disallows the licensor to license the same rights to any other party, it also excludes the licensor from using its rights. Essentially, an exclusive licence allows only one party to exploit the IP, namely the exclusive licensee. 3.2 Non-exclusive licence A non-exclusive licence means that the rights granted by the licensor to the licensee may also be granted to other parties. In other words, a non-exclusive licence does not exclude the possibility of the licensor granting further licences to other parties, that is to say that the licensor may license the same rights to more than one party. This type of licence is appropriate in situations where the licensor intends to offer licences to multiple parties. One common example of a non-exclusive licence is a computer software licence where numerous users are granted licences for use of the software. 3.3 Sole licence A sole licence is the same as an exclusive licence with the exception that the licensor retains its rights to use the IP. This means that, for a sole licence, both the sole licensee and the licensor have the rights to use the IP. <IB/CSSD/FAC/IP003> 6

7 4.0 ADVANTAGES OF LICENSING 4.1 Why license? Licensing, in general, can benefit both the licensor and the licensee. Amongst the many advantages of licensing are: Revenue generation Licensing often serves as a revenue generation tool for the licensor. Risk minimization The burden of the risk involved in commercialisation through a licensing arrangement is shared by both parties, and thus, minimised. In the case of the licensor, its risk is minimised by licensing its IP to a third party who has the expertise to commercialise the product, instead of attempting to undertake the commercialisation itself, especially if it lacks the necessary expertise and resources. Similarly for the licensee, its risk could be minimised by licensing in readily available technology with a proven track record, instead of investing in its own R&D to develop the same. Reduction in costs For the licensor, licensing of its IP, will expand its business and generate income while saving on capital expenditure as it need not invest in any equipment or machinery to carry out the commercialisation aspect. Similarly for the licensee, its R&D costs may be reduced by licensing in new innovative technologies, which are often accessible at a lower cost as compared to developing them in-house. Immediate access to new technologies Many entities, especially small companies, do not possess the necessary resources or capacity to conduct its own R&D for technological advancements. For such companies, licensing provides a pathway to access new technologies. Larger companies with ample resources meanwhile may resort to licensing to gain a competitive advantage and remain ahead of competitors. Trying to reproduce the same in-house, may not only be time-consuming but the attempt may not necessarily be successful. The mechanism of licensing thus offers not just an immediate access to new technologies but also a cost effective option. <IB/CSSD/FAC/IP003> 7

8 Means of avoiding costly legal action The licensor, through licensing to a potential infringer, may avoid a costly legal action while at the same time also profiting from its licensing revenue. This arrangement may also minimize the risk of the validity of its IP being challenged by the potential infringer, which would often be the defence of the infringing party in an IP infringement trial. Broad field of contacts A licensor may also benefit from the broad field of contacts and networks of the licensee to find new markets, either for commercial exploitation of its other technologies or other collaborative opportunities. Likewise, the licensee is also able to capitalise on the licensor s contacts for access to different types of technologies or even opportunities for joint ventures. Competitive advantage By having access to new or additional expertise through the licensor, the licensee is able to leverage on the same to gain a competitive edge over its business rivals. Also, via transfer of technology arrangements from the licensor to the licensee, the licensee s technical knowledge and competencies can be enhanced. Access to new markets Licensing is one effective way to gain access to new markets, which would otherwise be inaccessible to the licensor. For instance, by granting a licence to a foreign licensee with wide marketing and distribution channels, the licensor is able to enter new markets which could not have been penetrated by the licensor itself. Collaboration opportunities Licensing also helps initiate and establish new relationships and creates collaboration opportunities for companies or individuals, to work together. The parties can leverage on their different strengths and expertise, towards development of new products or enhancements of existing versions. Both the licensors and licensees benefit from such ventures. With the right licensing strategies, winning partnerships can be built. Retain control of IP By way of licensing, the licensor is also able to retain some control of its IP. This is in contrast with an assignment, where the owner loses control of the same. <IB/CSSD/FAC/IP003> 8

9 5.0 PREPARING TO NEGOTIATE A LICENCE AGREEMENT As in any business transaction, a licensing deal or agreement should not be concluded without conducting a due diligence exercise beforehand. It is important to do one at the early stages of the negotiating process as this gives the parties ample time to resolve any concerns that may surface Due diligence What is a due diligence? So much has been said about due diligence but what does it mean? In BusinessDictionary.com ( the term due diligence in the context of negotiation, is defined as duty of each party to confirm each other s expectations and understandings, and to independently verify the abilities of the other to fulfil the conditions and requirements of the agreement. It is also called reasonable diligence. According to the same source, due diligence from an investment perspective, also means duty of the investor to gather necessary information on actual or potential risks involved in an investment. Who should conduct a due diligence? The answer to this frequently asked question is quite simple. Both parties should undertake the necessary due diligence to protect their individual interests. Licensor's considerations On the part of the licensor, it is a common practice to conduct a due diligence on the licensee. Usually, the licensor would carry out a background check on the licensee to ascertain its financial standing or commercial credibility, and perhaps also, its technical competency or manufacturing capacity and facility, depending on the requirement of the intended transaction. A review of the legal position of the company is also crucial in ensuring that it is free of any legal encumbrances. Other qualities which a licensor seeks in a potential licensee include its vast experience and ability to successfully carry out the intended commercial venture and provide a sound financial return. An assessment of the company s track records and business strategies, and also the competency level of the licensee's key personnel is usually conducted for this purpose. The reputation of a potential licensee is also of concern to the licensor because an errant licensee could cause irreparable damage to its reputation and standing in the market place. <IB/CSSD/FAC/IP003> 9

10 The licensor also needs to ascertain whether the licensee deals with other technologies or products which may be in direct competition with that of the licensor. If there is a conflict of interest, the licensee may not be able to deliver its best performance as its business focus may be divided. The information gathered from a due diligence exercise may assist the licensor in making an informed decision as to whether the licensee will be a suitable partner for the commercial venture. Otherwise, the licensor may pursue other potential partners. Choosing the right partner is imperative to the success of the business. Another key area of concern for the licensor is the valuation of the subject IP which should be undertaken at the initial stages to provide the licensor with a realistic value of the worth of its IP and also the returns it may expect to gain from the licensing deal. This valuable information may not only serve as a basis for negotiating a fair and reasonable deal but also prevents the licensor from ending up with a non-profitable one. Besides valuation, it is also important that the licensor undertake a review of its IP portfolio to establish the validity and enforceability of its IP rights which it intends to licence. There is a possibility that the licensor s IP could have, unknowingly to the licensor, lapsed due to some unforeseen circumstances or improper management. This is highly likely in entities with a huge IP portfolio and also where there is poor management of the same. An assessment of the scope and strength of its IP rights is also vital in ensuring that the licensor grants not more than what it holds. Licensee s considerations As for the licensee, on its part, it should carry out an independent investigation and not just rely on the information provided by the licensor. One critical area of concern for the potential licensee is the ownership of the IP which is being licensed. The licensee has to ascertain that the company licensing out its IP has valid rights to the same. For a registered IP, this may be done through searches of official records or registers made available by the relevant authorities. Official documents evidencing the ownership, such as certificates of registration, or extracts from the records of authorities reflecting any changes, for instance, transfers of titles, must be sighted and verified. However for unregistered IP, the process is not so straightforward. The evidence required varies depending on the nature of such rights. In some cases, log books, R&D data and publications in prominent and reputable scientific journals may suffice but occasionally additional sources may be needed to establish ownership of such rights. <IB/CSSD/FAC/IP003> 10

11 Another matter of great concern for the licensee is the status of the IP in question. The licensee must ensure that the IP in question is still enforceable, meaning that it has not lapsed or been abandoned, and also, that it is not the subject of any legal dispute. Further, whether the IP is protected in the relevant jurisdictions of interest to the licensee, as claimed by the licensor, must be determined. Determining the scope and strength of the IP is also critical to the licensee in ensuring that it obtains all that which is necessary for the performance of its task. Importance should also be given to the valuation of the subject IP as this will give the licensee an indication of its technical and monetary value. With such information, the licensee may be in a better position to negotiate a fair deal. The extent of a due diligence which needs to be undertaken by each party will vary and depend greatly on the nature of the transaction and technology involved. As due diligence is generally a complex and tedious process, professional advice and assistance should be solicited. It is best that an expert be engaged to undertake this critical exercise as the outcome is often significant and may be the deciding factor in sealing a commercial deal or otherwise. 6.0 NEGOTIATING A LICENCE AGREEMENT It is vital to understand that there is no standard licence or licensing agreement. The terms of licences vary greatly. Licensing agreements are crafted specifically to suit the nature of the transaction concerned as each one of them is unique in its own way. Various factors need to be considered when negotiating a licensing deal, more so a deal concerning technology. The golden rule in negotiating a successful licence agreement is to aim for a win-win outcome. Given the parties reliance on each other to extract maximum value and profits from the commercial venture, licensing should be regarded as a long-term partnership. If well nurtured, it could develop into a flourishing relationship. Hence, licensing negotiations and transactions should be handled with due care and consideration by both parties. The terms of the licence should be negotiated for mutual benefit. Also, it is crucial for the licensing agreement to be clear, transparent and have realistic objectives and expectations. Each party must understand its obligations, the terms and conditions which have to be met and also the consequences of any non-performance, amongst others. There should be no room for ambiguity, as this is often the cause for misinterpretation, which could eventually lead to disputes. <IB/CSSD/FAC/IP003> 11

12 A successful licensing agreement can not only be profitable but also be satisfying and rewarding in numerous ways. Predictably, commercial success stemming from such ventures also plays a large role in boosting the image and reputation of the partners and the partnership. This is particularly important for new players intending to penetrate a new and niche market or capture a larger share of the marketplace. 6.1 FACTORS FOR CONSIDERATION Provided here are some of the factors which should be taken into consideration when negotiating a licence agreement. PARTIES Although this may be patently obvious to many, it must be emphasised that a licence agreement should be made between the party which has the rights to grant the licence and the party which would be exercising the same. It must also be stressed that the parties entering the agreement will the ones which would be legally bound by the provisions of the agreement. As such, identification of the right parties is imperative for this purpose. Some key questions which need to be asked in this regard are: o Who are the parties entering into the licence agreement? o Do they have the legal rights to enter into the agreement o Who may exercise the rights granted by the licence? Is it limited to the licensee? o Are the rights granted under the licence extended to the licensee s subsidiary companies or affiliates? If so, what will be the conditions? Is a sub-licence required? SCOPE OF LICENCE The scope of a licence is one of the most important elements of a licence agreement as it defines the extent of rights that is being licensed or granted to the licensee, including restrictions, if any. The scope of the agreement, in essence, determines what it is that the licensee is given permission to do. In plain language, it sets out what the licensee can and cannot do. Licences, generally, can be of a broad or limited scope as intended by the parties involved. Typically, the licensor will prefer to keep the scope of the licence as narrow as possible. In contrast, the licensee will seek the opposite i.e. the broadest scope possible. It is important to ensure that the scope of grant is not more than what the licensor owns or holds. The scope needs to be defined and restricted clearly. <IB/CSSD/FAC/IP003> 12

13 Here are some of the areas which define and determine the scope of the licence: i. SUBJECT MATTER It is vital to clearly identify and define the subject matter of the licence. This is necessary to avoid ambiguity or misinterpretation. Among the points which need to be considered are: o What exactly is being licensed? What type of IP rights exist in the subject matter and which of these are being licensed? Is it just a patent or a whole bundle of IPs? Is know-how included? Are other related IP such as a trade mark or an industrial design included? What about copyright works? All the IP rights involved needs to be clearly identified and listed, and should be made a part of the agreement. For registered rights, registration details of the same should be included, whereas for unregistered rights, it is essential that there is sufficient detail and description of the rights. o What specific rights are being granted? What is the licensee allowed to do with such rights? May it make, use or sell, or offer for sale, or import the licensed product? Or are the rights confined to just manufacturing? o What is the licensee restricted from doing with such rights? Is it restricted from importing the licensed products? Is it restricted from modifying the licensed product or further developing the same? ii. FIELD OF USE The field of use defined imposes a restriction on the scope of the licence. Points to consider are: o Are the rights granted for various fields of use or will the same be restricted to a particular field of use? For example, are the rights confined to only the healthcare sector or does the same extend to agricultural and industrial uses as well? iii. DEGREE OF EXCLUSIVITY The agreement should expressly indicate the degree of exclusivity of the rights granted to the licensee, that is, whether the licence is exclusive, nonexclusive or a sole licence. Even exclusive rights can be restricted according to geographical areas, period of time or by field of use. Some points to consider in this area are: o Is the licence exclusive, non-exclusive or sole? <IB/CSSD/FAC/IP003> 13

14 o If exclusive, how exclusive? Is it exclusive only within a particular territory or field of use? Is it exclusive for a specific time? iv. TERRITORY The territorial or geographical scope of the licensee s rights which must be stated clearly in the agreement. A licensee may be granted exploitation rights on a worldwide basis or limited to specific geographical areas based on various factors, such as the type of technology, the licensee s technical competency, distribution channels and networks, marketing strength and market share, etc. Some questions for consideration are: o Is the licence granted for worldwide use or is it restricted to a particular territory? o What specific rights are granted for which territory? o Where can the licensee manufacture the licensed products? Are manufacturing rights granted generally or is it restricted to a specific territory? o Where can the licensee sell or market the licensed products? Does the licensee have marketing and distribution rights for a worldwide market or is it confined to a limited geographical area? v. IMPROVEMENTS The ownership of improvements generated during the term of the licence agreement is an important issue and must be addressed in the agreement. The obligations and conditions for entitlement for both parties should be negotiated and clearly stipulated in the agreement so as to avoid disputes concerning the matter in the future. Among the main points to consider are: o Does the licensee have rights to modify, make improvements or enhancements or do further developments? o Who will own the IP in any improvements or enhancements or developments arising from continuous R&D activities undertaken, either by the licensee or the licensor, separately on their own, during the tenure of the licence? What about new IP generated through joint collaboration? o Will the new IP be wholly owned by the licensor or jointly owned by the parties on the ratio of contribution of each party? Or will it belong to whichever party that generated the same? o Is there any specific obligation for the parties in relation to the improvements? If so, what are they? <IB/CSSD/FAC/IP003> 14

15 vi. SUB-LICENSING It is important to note that sub-licensing rights must be expressly granted. Therefore, if a licensee is granted sub-licensing rights, it must be clearly stipulated in the agreement. Generally, sub-licensing rights are subject to certain terms and conditions. Often, it includes payments to the licensor for revenue generated through sub-licensing activities. Factors to consider include: o Does the licensee have the right to sub-licence to third parties? If so, does it need to obtain prior consent from the licensor? o What are the terms and conditions for sub-licensing? o Is there a sub-licensing fee payable to the licensor? If so, what is the amount and how is it determined? ASSIGNMENT Usually, the licensee would be prohibited from assigning the licence to a third party. However, if such option is required by the licensee, the same should be negotiated and agreed upon and expressly indicated in the agreement. Any conditions imposed here should also be included. Factors to consider: o May the licensee assign the licence to a third party? If so, does it require prior permission from licensor? o If permitted, what would be the conditions and circumstances in which the licensee is permitted to assign the licence? MINIMUM PERFORMANCE This clause is usually included in a licensing agreement to protect the licensor s interest. It ensures that the licensor receives a reasonable amount of revenue from the licensing deal. Questions to ask include: o Are there any minimum performance and payment obligations for the licensee? If so, what are they? Is there a minimum guaranteed royalty payment? Is there any minimum sales or some other target? o Are the minimum requirements reasonable? How are they determined? o What will happen if the target is not met? Will the licence be terminated? Are there any exceptions? <IB/CSSD/FAC/IP003> 15

16 OBLIGATIONS OF THE PARTIES Each party will have specific obligations and the same must be clearly mentioned in the agreement. i. OBLIGATIONS OF THE LICENSOR Key factors to consider: o What are the obligations of the licensor? o Is the licensor required to provide technical support and assistance? If so, in what manner, period and condition will the same be delivered? Is it the duty of the licensor to provide technical training for the licensee s personnel? If so, for how long? Who will bear the training costs - the licensor or the licensee? o Does the licensor need to register, protect and enforce its licensed IP? Who will bear the costs the licensor or the licensee? o How will the licensor deal with a third party IP infringement claim or validity challenge of its IP? ii. OBLIGATIONS OF THE LICENSEE Key factors to consider: o What are the obligations of the licensee? o Is there a condition to adhere to certain standards and specifications? o Is there a requirement to comply with legal and regulatory requirements? o What is the minimum performance target? o Is the licensee prohibited from challenging the validity of the licensed IP in the interest of the licensor? If in the affirmative, is the licensee agreeable to such obligation? INFRINGEMENT An IP infringement is the violation of the rights of the owner of the IP. It occurs when a person other than the owner of the IP exploits the owner s rights without its consent. It is important to consider and determine how the same will be handled and which party will be responsible to initiate appropriate actions against the infringer. Factors for consideration: o How is an infringement dealt with? o Which party will be responsible? o Is the licensee given the right to take action against the infringer? Can it initiate any action on his own or does he need to obtain consent from the licensor? <IB/CSSD/FAC/IP003> 16

17 PROTECTION OF CONFIDENTIAL INFORMATION Obligations of the parties relating to confidential information during the tenure of the agreement as well as after its expiry need to be spelled out clearly so that the parties are clear of their obligations. Questions to be asked are: o What are the obligations of the licensor and licensee pertaining to confidentiality of information? o What happens to the confidential documentation upon the expiry or termination of the licence agreement? Is the licensee required to return them to the licensor or should the same be destroyed? FINANCIAL CONSIDERATIONS This is another critical element of the licensing agreement which addresses monetary considerations and should be negotiated realistically based on the value of the licensed IP. If valuation of the IP has been undertaken by the parties prior to the negotiation, the information obtained would be helpful to reach an agreement or at least find middle ground. Factors to consider: o What is the amount and mode of payment? Will it be a one-time fixed amount or yearly fees? When will it be paid on signing the agreement or upon achieving a particular milestone? o Will there also be recurring payments in the form of royalties based on sales of licensed products, for instance? If so, will the royalty be at a fixed rate or will it be a running royalty? How will it be calculated based on gross or net sales? Generally, royalties are computed as a percentage of the total sales revenue. A running royalty however differs in that it is usually calculated on the basis of the number of units sold. o When will the royalty payment start? o Will there be any minimum royalty payment? If so, what is the amount? o What about late payments? Will there be interest charged on late payments? If so, how much? o In which currency will the payments be made? o Is the licensee required to keep an account of its sales? Does the licensor have the right to audit the licensee s books? If yes, how often anytime, monthly, quarterly, half-yearly or yearly? TERM This clause typically sets out the time period or duration in which the licence will be effective and enforceable. <IB/CSSD/FAC/IP003> 17

18 Main considerations include: o What is the term or duration of the licence? Is it for perpetuity or a fixed period of time? Or is it for the life of the licensed IP? o If it is for a fixed period, is there a right to renew or extend the term on expiry of the initial period? If yes, will the terms and conditions remain the same or will they be reviewed? TERMINATION The termination clause should spell out clearly under what conditions the licence agreement may be terminated. Key questions to be asked are: o Is there a clear termination clause in the agreement? If so, what are the conditions for termination? Generally, non-performance and non-payment are among the usual conditions imposed. o What will happen after termination or expiry of the licence? o Are there any provisions which survive termination or expiration? If so, what are those and for what period of time? WARRANTIES The agreement may contain certain warranties from the licensor, which relate primarily to the licensed IP. The common ones are on ownership of the licensed IP and non-infringement of third party rights. Some key factors to be considered are: o What will the licensor warrant? It must be stressed here that the licensor should warrant only what it knows. o Will the licensor give a warranty that it is the rightful owner of the IP and has rights to licence the same? o Will the licensor warrant that the use of the IP will not infringe third party rights? GOVERNING LAW This clause is particularly important if the parties are from different legal jurisdictions. Key points to consider: o Which country s law governs the licence agreement? Is it clearly specified? o Are both parties agreeable to the choice of law? <IB/CSSD/FAC/IP003> 18

19 DISPUTE SETTLEMENT This part generally gives an indication on the available mechanisms of dispute settlement between the parties. Factors to consider: o How will disputes between the parties, if any, be resolved? What are the mechanisms available? o Will the parties consider civil action or alternate dispute resolution procedures, such as arbitration and mediation? Generally, parties opt for the latter as it is not only cost effective but also time effective. OTHER CONSIDERATIONS i. Definitions o To minimise misinterpretation, it is advisable to define the important terms and include them in the agreement. ii. Official contact persons o Who are the official contact persons for each of the parties? Where should official correspondence or notifications be sent to? The names of the relevant people and their complete address and contact details should be provided. The list of factors discussed here is by no means exhaustive. It merely serves as a guide intended to assist in addressing some of the more common issues that arise and require careful consideration in negotiating a licensing deal. 7.0 APPENDIX 7.1 Appendix I Sample of Licence Agreement 7.2. Appendix II Checklist: Matters for Consideration in a Licence Agreement <IB/CSSD/FAC/IP003> 19

20 APPENDIX I <IB/CSSD/FAC/IP003> 20

21 APPENDIX I SAMPLE OF LICENCE AGREEMENT (courtesy of the World Intellectual Property Organization (WIPO) <IB/CSSD/FAC/IP003> 21

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31 APPENDIX II <IB/CSSD/FAC/IP003> 31

32 APPENDIX II CHECKLIST: MATTERS FOR CONSIDERATION IN A LICENCE AGREEMENT MATTERS QUESTIONS FOR CONSIDERATION A) PARTIES Who are the parties entering into the licence agreement? B) SCOPE OF LICENCE Are their details (i.e. full names, registered office addresses and company registration numbers) complete? a) Subject matter What exactly is being licensed? What types of IP rights are being licensed and what specific rights are granted? What can the licensee do or cannot do with these rights? b) Field of use Is the licence restricted to one particular field or does it apply to more? Are the fields of use clearly specified? c) Exclusivity Is the licence exclusive, non-exclusive or sole? d) Territory Is the geographical territory of the licence clearly indicated? e) Improvements Who will own the IP arising from any improvement or new development? f) Sub-licensing Is the licensee given sub-licensing rights? If so, what are the terms and conditions? <IB/CSSD/FAC/IP003> 32

33 C) ASSIGNMENT Is the licensee permitted to assign the licence to a third party? If so, is there any condition attached? D) MINIMUM PERFORMANCE What are the minimum performance obligations of the licensee? Are they clearly specified? E) OBLIGATIONS OF THE PARTIES a) Licensor b) Licensee What are the obligations of the licensor? Are the same clearly specified? What are the obligations of the licensee? Are the same clearly specified? F) INFRINGEMENT Who will be responsible for initiating any action in the event of an infringement? Who will incur the expenses for such action? G) CONFIDENTIALITY What are the obligations of the licensor pertaining to confidentiality of information? What type of information is to be kept confidential and what is the duration for the same? H) FINANCIAL CONSIDERATIONS What is the amount and mode of payment? Will it be a lump sum payment or will there also be recurring payments in the form of royalties? If so, what will be the royalty rate and how will it be calculated? When will the royalty payment start? Is there any minimum payment? In which currency will the payments be made? What about late payments? Will there be an interest charged on late payments? If so, how much? Is the licensee required to keep an account of its sales? Does the licensor have the right to audit the licensee's accounts? I) TERM What is the term or duration of the licence? Is it clearly stipulated? <IB/CSSD/FAC/IP003> 33

34 J) TERMINATION Is there a clear termination clause in the agreement? Are the conditions for termination clearly stipulated? Are there any provisions which survive termination? K) WARRANTIES Will the licensor give any warranty? If so, what will the same be? L) GOVERNING LAW Which country s law governs the licence agreement? Is it clearly specified? M) DISPUTE SETTLEMENT N) OTHER CONSIDERATIONS Are the mechanisms for any dispute settlement between the parties clearly stipulated? Are the definitions of key terms included in the agreement? Who are the designated contact persons for each party? Are their details (i.e. full names and official addresses) complete? Note: This checklist is merely intended as a guide and is by no means exhaustive. <IB/CSSD/FAC/IP003> 34

35 CONTACT For further information or clarification, please contact: The Vice President Facilitation, Client Support Services Division Malaysian Biotechnology Corporation Sdn Bhd Level 20 Menara Atlan 161B Jalan Ampang Kuala Lumpur T: F: E: <IB/CSSD/FAC/IP003> 35

36 REFERENCE The author acknowledges reference to the following sources in the preparation of this booklet: Resources made available by the World Intellectual Property Organization (WIPO) and the Licensing Executives Society International (LESI) <IB/CSSD/FAC/IP003> 36

37 Disclaimer: This IP Booklet is intended as an overview and a basic information guide only. The information contained herein does not constitute legal or professional advice. While every effort has been made to ensure the information contained herein is correct as at the date of publication, the Malaysian Biotechnology Corporation makes no guarantee to the accuracy or completeness of any information contained herein; and assumes no liability or responsibility whatsoever for any error, omission, consequence, damage, cost and/or loss arising from the reliance or the use of the same. The Malaysian Biotechnology Corporation hereby disclaims all liability in respect of the information provided herein. <IB/CSSD/FAC/IP003> 37